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` UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`HULU, LLC,
`AMAZON.COM, INC., and
`NETFLIX, INC.,
`Petitioners,
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`v.
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`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner.
`____________________
`
`Case IPR2018-01187
`Patent No. 9,769,477
`____________________
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`PATENT OWNER’S RESPONSE
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`Case IPR2018-01187
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`TABLE OF CONTENTS
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`I.
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`Introduction ..................................................................................................... 1
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`II.
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`Background of the ’477 patent and challenged claims ................................... 3
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`III.
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`Petitioners’ proposed claim constructions ...................................................... 7
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`IV. Ground 1 fails to explain what would be the “first asymmetric data
`encoder” and what would constitute the “second asymmetric data
`compression encoder” ..................................................................................... 7
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`V. Ground 1 does not show that Imai discloses or suggests “a first
`asymmetric data compression encoder . . . configured to compress
`data blocks containing video or image data at a higher data
`compression rate than a second asymmetric data compression
`encoder” ........................................................................................................ 17
`
`A.
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`B.
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`Limitation 1[B] requires two asymmetric data compression
`encoders, with the first encoder being configured to compress
`video or image data faster than the second encoder .......................... 17
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`2.
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`The Petition’s allegations do not even attempt to show one
`encoder that is “configured to” compress at a higher rate than
`another encoder, and thus cannot demonstrate obviousness .............. 22
`1.
`Petitioners’ argument that limitation 1[B] would be met by
`chance reads “configured to” out of the limitation ................. 22
`The Petition’s argument that Imai teaches “different
`asymmetric data compression encoders” that have “different
`data compression rates” is both inadequate and unsupported 24
`a)
`Imai’s use of “compression rate”.................................. 25
`b)
`Imai’s reference to “amount of computation for
`decoding” ...................................................................... 28
`Imai’s reference to “64 Kbps, 32K bps, 24 Kbps” ....... 28
`c)
`The Petition’s suggested modification runs contrary to Imai’s
`goal of ensuring that audio data can be reproduced in real time
` ................................................................................................. 30
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`3.
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`VI. Ground 2 fails to show that Pauls teaches or suggests “a first
`asymmetric data compression encoder . . . configured to compress
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`. . . at a higher data compression rate than a second asymmetric data
`compression encoder” as required by Claim 1 ............................................. 36
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`A. Ground 2 fails to identify what would constitute the “first
`asymmetric data encoder” and what would constitute the
`“second asymmetric data compression encoder” ............................... 36
`
`B.
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`Ground 2 points to no disclosure or discussion of compression
`rates of any encoder or algorithm ....................................................... 36
`1.
`“different levels or percentages of compression” ................... 37
`2.
`Pauls’s Fig. 5 bitrates .............................................................. 38
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`C.
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`Ground 2 further fails because it also fails to meet the
`“configured to” requirement of Claim 1 ............................................ 39
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`VII. Ground 3 fails to explain why a POSITA would make its alleged
`modifications ................................................................................................ 41
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`VIII. Ground 3 further fails because it does not purport to address any of
`the flaws in Grounds 1 and 2 ........................................................................ 50
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`IX. Ground 3 and 4 do not explain how a POSITA would combine the
`references ...................................................................................................... 51
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`X. Ground 4 does not address the tradeoffs inherent in its motivation to
`combine ......................................................................................................... 54
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`XI. Ground 4 further fails because it does not purport to address the
`additional limitations of Independent Claim 20 or any of the flaws in
`Grounds 1- 3 ................................................................................................. 57
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`XII. Conclusion .................................................................................................... 60
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`EXHIBIT LIST
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`Exhibit No.
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`2001
`
`2002
`
`2003
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`2004
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`Description
`Declaration of Kayvan B. Noroozi in Support of Motion for
`Admission Pro Hac Vice.
`
`Declaration of Kenneth A. Zeger, Ph.D.
`
`Transcript of Oral Deposition of James Storer, Ph.D, taken in
`IPR2018-01187 on May 8, 2019.
`Digital Compression and Coding of Continuous-Tone Still
`Images – Requirements and Guidelines (JPEG Standard)
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`Case IPR2018-01187
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`I.
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`Introduction
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`It is axiomatic that unpatentability cannot be found where the Petition fails
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`to explain how the prior art, alone or combined, reads on to and discloses each and
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`every limitation of the challenged claims. The instant Petition fails at that crucial
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`level. The Petition never identifies a specific “first asymmetric data encoder” that
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`is “configured to” compress faster than a “second asymmetric data encoder.” And
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`Petitioner’s expert, Dr. Storer, was unable to provide any further detail under
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`cross-examination. Rather than identify any “first encoder” that would be
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`“configured” to be faster than any “second encoder,” Dr. Storer merely stated that
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`any encoder could constitute the “first” or “second” encoders. Infra at IV. That
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`assumes that the claim simply requires two encoders, whereas in fact the claim
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`requires one encoder that is “configured to” compress faster than a second encoder.
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`Infra at IV-V. Indeed, the Petition simply attempts to read “configured to” out of
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`the claim—contravening numerous Federal Circuit precedents. And by stating that
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`either of Imai’s encoders could compress at a faster rate than the other one, the
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`Petition actually concedes than Imai cannot meet Claim 1: to admit that either
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`encoder could be faster is to admit that neither encoder is configured to be faster
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`than the other. Ex. 2002 ¶61.
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`Moreover, the Petition entirely fails to recognize—and address—the distinct
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`requirements of independent Claim 20 and its dependents, which require
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`compression at a higher ratio, rather than a higher rate (or speed), as recited in
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`Claim 1.
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`The Petition thus fails to show that the prior art either taught the challenged
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`claims or rendered them obvious.
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`The Petition also fails to provide an adequate motivation to combine,
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`notwithstanding the Federal Circuit’s decision in Realtime v. Iancu, 912 F.3d 1368
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`(Fed. Cir. 2019). The motivation to combine inquiry is necessarily fact-specific. A
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`simpler combination entails a lower hurdle than a more complex one. In Realtime
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`v. Iancu, the Federal Circuit merely addressed the adequacy of the petition’s
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`showing that an ordinary artisan would have “turned to” a secondary reference in
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`order to “better understand or interpret” the primary reference’s compression
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`algorithms. Id. at 1374 (“This is enough evidence to support a finding that a person
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`of ordinary skill in the art would have turned to Nelson, a well-known data
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`compression textbook, to better understand or interpret O’Brien's compression
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`algorithms.”) (emphasis added). The Federal Circuit did not hold that the
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`motivation to combine evidence in Realtime v. Iancu was sufficient to prove that
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`an ordinary artisan would have modified the primary reference in light of the
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`secondary reference. To the contrary, the theory accepted in that case relied
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`entirely on the teachings of the primary reference alone to meet all claim elements,
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`and did not require any modification to the primary reference. Id. By contrast, the
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`combinations at issue here requires substitutions and modifications to Imai in view
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`of Pauls. But the Petition does not demonstrate why an ordinary artisan would have
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`been motivated to make those specific proposed modifications, as the law requires.
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`Thus, as this Response demonstrates, the Petition cannot prevail.
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`II. Background of the ’477 patent and challenged claims
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`Petitioners challenge Claims 1-6, 9-14, 20-22, and 25-27 of U.S. Patent No.
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`9,769,477. The Petition’s challenge is based on the following Grounds:
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`Ground
`Ground 1
`Ground 2
`Ground 3
`Ground 4
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`Challenged Claims
`Basis
`References
`Obviousness (§103) 1, 3-5, 12-14
`Imai
`Obviousness (§103) 1, 3-6, 9-14
`Pauls
`Imai and Pauls Obviousness (§103) 1, 3-6, 9-14
`Imai, Pauls, and
`Obviousness (§103) 2, 11, 20-22, 25-27
`Chao
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`The ’477 patent “is directed to a system and method for compressing and
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`decompressing based on the actual or expected throughput (bandwidth) of a system
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`employing data compression . . . . ” Ex. 1001 at 7:66-8:3. The invention seeks to
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`“provide[] a desired balance between execution speed (rate of compression) and
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`efficiency (compression ratio).” Id. at 8:24-27. For example, where the speed of
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`the encoder causes a “bottleneck” because “the compression system cannot
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`maintain the required or requested data rates,” “then the controller will command
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`the data compression system to utilize a compression routine providing faster
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`compression . . . so as to mitigate or eliminate the bottleneck.” Id. at 14:14-24.
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`Claim 1 is directed to a system that selects among “asymmetric data
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`compression encoders” where “a first asymmetric data compression encoder . . . is
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`configured to compress . . . at a higher data compression rate than a second
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`asymmetric data compression.” Claim 1 of the ’477 patent recites:
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`Element Claim 1
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`1[PR]
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`A system, comprising:
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`1[A]
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`a plurality of different asymmetric data compression encoders,
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`wherein each asymmetric data compression encoder of the
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`plurality of different asymmetric data compression encoders is
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`configured to utilize one or more data compression algorithms,
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`and
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`1[B]
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`wherein a first asymmetric data compression encoder of the
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`plurality of different asymmetric data compression encoders is
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`configured to compress data blocks containing video or image
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`data at a higher data compression rate than a second asymmetric
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`data compression encoder of
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`the plurality of different
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`asymmetric data compression encoders; and
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`1[C]
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`one or more processors configured to:
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`determine one or more data parameters, at least one
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`of the determined one or more data parameters
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`relating to a throughput of a communications
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`channel measured in bits per second; and
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`1[D]
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`select one or more asymmetric data compression
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`encoders from among the plurality of different
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`asymmetric data compression encoders based upon,
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`at least in part, the determined one or more data
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`parameters.
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`The specification of the ‘477 patent makes clear that “data compression rate”
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`refers to the “execution speed of the algorithm.” Id. at 1:63-67. Thus, Claim 1 and
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`its dependents require a “first asymmetric data compression encoder” that is
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`“configured to compress” at a higher execution speed than a “second asymmetric
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`data compression encoder.”
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`Independent Claim 20, by contrast, requires “a first video data compression
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`encoder . . . configured to compress at a higher compression ratio than a second
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`data compression encoder.” Thus, unlike Claim 1, which recites a compression
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`rate (i.e., speed), Claim 20 recites compression ratio (i.e., size of the compressed
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`data compared to the uncompressed data). Claim 20 further requires “at least one
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`of the video data compression encoders” to be “configured to utilize an arithmetic
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`data compression algorithm.” Claim 20 recites:
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`Element Claim 20
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`20[PR]
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`A system comprising;
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`20[A]
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`a plurality of video data compression encoders;
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`20[B]
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`wherein at least one of the plurality of video data
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`compression encoders
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`is configured
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`to utilize an
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`asymmetric data compression algorithm, and
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`20[C]
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`wherein at least one of the plurality of video data
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`compression encoders is configured to utilize an
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`arithmetic data compression algorithm,
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`20[D]
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`wherein a first video data compression encoder of
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`the plurality of video data compression encoders is
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`configured to compress at a higher compression
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`ratio than a second data compression encoder of the
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`plurality of data compression encoders; and
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`20[E]
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`one or more processors configured to:
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`determine one or more data parameters, at least one
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`of the determined one or more data parameters
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`relating to a throughput of a communications
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`channel; and
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`20[F]
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`select one or more video data compression encoders
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`from among the plurality of video data compression
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`encoders based upon, at least in part, the determined
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`one or more data parameters.
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`III. Petitioners’ proposed claim constructions
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`The Board does not construe claim terms unnecessary to resolve the
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`controversy. Shenzhen Liown Electronics Co. v. Disney Enterprises, Inc.,
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`IPR2015-01656, Paper 7 at 10 (Feb. 8, 2016) (citing Vivid Techs., Inc. v. Am. Sci.
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`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
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`Petitioners have proposed constructions for the terms “asymmetric data
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`compression encoder[s]” and “data blocks.” Pet. 7-9. These terms do not require
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`construction in order to resolve the parties’ dispute. Rather, as this Response
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`demonstrates, the Board should deny the Petition in full regardless of Petitioners’
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`proposed. Accordingly, the Board need not construe “asymmetric data
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`compression encoder[s]” or “data blocks.”
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`IV. Ground 1 fails to explain what would be the “first asymmetric data
`encoder” and what would constitute the “second asymmetric data
`compression encoder”
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`A Petition cannot establish unpatentability, based on anticipation or
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`obviousness, where it fails to articulate how the prior art teaches a particular claim
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`limitation. See, e.g., Comcast Cable Commc’ns, LLC v. Rovi Guides, Inc.,
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`IPR2017-00956, 2017 WL 4102214, at *6 (Sept. 15, 2017) (“Comcast does not
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`explain how this disclosure meets the claim limitation of control circuitry on a
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`mobile device processing data ‘to identify content’ of television programming ‘to
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`generate a first graphical user interface.’”); Arris Int’l Plc v. Sony Corp., IPR2016-
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`00827, 2016 WL 6594910 (Sept. 28, 2016); Cao Grp., Inc. v. The Proctor &
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`Gamble Company, IPR2014-00797, 2014 WL 6706553, at *5 (Nov. 26, 2014)
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`(“Patent Owner contends that the Petitioner has not established anticipation of
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`every element of the claims because Petitioner does not adequately explain how
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`Gaglio discloses either the pressure limitation or the viscosity and tackiness
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`limitation that is required by each of the claims. We agree.”).
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`The Federal Circuit has held that obviousness based on a prior art
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`combination cannot be reached absent a clear explanation or evidence “showing [ ]
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`how the combination of the two references was supposed to work.” Personal Web
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`Tech. v. Apple, 848 F.3d 987, 994 (Fed. Cir. 2017) (emphasis original). As the
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`Federal Circuit explained in Personal Web, “such a clear, evidence-supported
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`account of the contemplated workings of the combination is a prerequisite to
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`adequately explaining and supporting a conclusion that a relevant skilled artisan
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`would [1] have been motivated to make the combination and [2] reasonably expect
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`success in doing so.” Id. (number and emphasis added).
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`Where a Petition relies on combining elements of the prior art, it must
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`explain “how any specific combination would operate or read on” the claims.
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`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327-28
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`(Fed. Cir. 2012). In other words, it is not enough for the Petition to simply point to
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`some aspect of the prior art and allege that it teaches or suggests a given limitation
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`in the challenged claim; the Petition fails unless it further explains how the cited
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`aspect of the prior art in fact teaches the limitation in question. Conclusory or
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`vague assertions will not do. KSR Intern. Co v. Teleflex Inc., 550 U.S. 398, 418
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`(2007) (“Rejections on obviousness grounds cannot be sustained by mere
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`conclusory statements.”); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821
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`F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in
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`the IPR proceedings adhere to the requirement that the initial petition identify
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`‘with particularity’ the ‘evidence that supports the grounds for the challenge to
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`each claim.’”) (emphasis added) (quoting 35 U.S.C. § 312(a)(3)).
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`Thus in Harmonic Inc. v. Avid Tech., Inc., the Federal Circuit affirmed the Board’s
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`finding that the Petition’s mere reference to certain teachings in the prior art,
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`without an explanation as to how those teachings met the elements of the
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`challenged claim, were fatally conclusory. 815 F.3d 1356, 1363 (Fed. Cir. 2016)
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`(finding that “Harmonic does not explain how Haskell’s control of bit rate
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`teaches the specific claim limitation”) (emphasis added).
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`To the same effect, the Federal Circuit made clear in Magnum Oil Tools
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`Int’l, Ltd. that “[t]o satisfy its burden of proving obviousness, a petitioner cannot
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`employ mere conclusory statements.” 829 F.3d 1364, 1380 (Fed. Cir. 2016). “The
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`petitioner must instead articulate specific reasoning, based on evidence of record,
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`to support the legal conclusion of obviousness.” Id. (emphasis added).
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`The Board has therefore not hesitated to reject a petition’s allegations where
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`they are found to be conclusory, and the Federal Circuit has routinely affirmed
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`such Board decisions. Harmonic, 815 F.3d at 1363; Wasica Fin. GmbH v. Cont’l
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`Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017); Securus Techs., Inc. v.
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`Glob. Tel*Link Corp., 701 F. App’x 971, 976–77 (Fed. Cir. 2017); Duke Univ. v.
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`BioMarin Pharm. Inc., 685 F. App’x 967, 978–79 (Fed. Cir. 2017).
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`Here, limitation 1[B] requires specifying which of at least two encoders is
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`the “first asymmetric data compression encoder” that is “configured to compress
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`. . . video or image data” and which is the “second asymmetric data compression
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`encoder” that is configured to likewise compress video or image data. Ex. 1001 at
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`Cl. 1[B].
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`Moreover, the two recited encoders cannot simply be interchanged because
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`they have differing characteristics. Ex. 2002 ¶48. Namely, the “first asymmetric
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`data compression encoder” must be “configured to compress . . . video or image
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`data at a higher data compression rate than a second asymmetric data compression
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`encoder.” Ex. 1001 at Cl. 1[B] (emphasis added); Ex. 2002 ¶48. Thus, the Petition
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`must identify a specific first encoder that is configured to compress at a higher rate
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`than a specific second encoder. Petitioners therefore cannot meet their burden to
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`show “how the combination of the two references [is] supposed to work” by
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`merely pointing to several encoders and alleging that some unspecified encoder
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`would satisfy the claims’ limitations. Personal Web Tech., 848 F.3d at 994.
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`But the Petition never attempts to specify any encoder that would constitute
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`the “first” encoder for purposes of the claims, or any encoder that would constitute
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`the “second” encoder. Ex. 2002 ¶40. The Petition’s allegations are thus inadequate
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`because they fail to specify a particular “first” encoder and a “second” encoder, as
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`the claims require. Id. at ¶41.
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`And while Patent Owner sought to clarify the matter with Petitioner’s expert
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`in deposition, Dr. Storer’s deposition testimony failed to elucidate the issue, and
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`only confirmed that the Petition and his declaration suffers from a fatal flaw.
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`Although Dr. Storer was asked many times in many ways to identify what, in Imai,
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`he contends is “a first asymmetric data compression encoder” for purposes of
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`Claim 1 and its dependents, he refused to do so. Instead, Dr. Storer merely
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`perpetuated the Petition’s fatally vague and non-committal stance on the issue,
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`repeatedly stating that the “first asymmetric data compression encoder” would be
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`whichever encoder was “faster.”
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`Q…I’m curious if there’s any encoder that you suggest is the first
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`asymmetric data compression encoder that Imai teaches?
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`A. Sure. So Imai actually includes a number of different approaches,
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`but certainly one, such as in Figure 5, where on the fly, Imai is going to
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`now determine what encoder will ensure this throughput, right? What
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`encoder will do the best job. So, for example, it even talks about making
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`an encoding schedule in adapting on the fly.
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`So, for example, if right now an encoder is not fast enough, it’s not
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`doing the job that's necessary in order to guarantee that throughput, or
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`it could also be that it’s not getting enough compression ratio. Okay?
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`But if that encoder, for example, is not fast enough -- okay? -- because
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`the data type is changed; Imai mentions different kinds of data types
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`that could be coming through, then that will change to a different
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`encoder. And that encoder that is faster, for example, would
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`correspond to a first encoder, and the one that is slower, that is being
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`replaced -- for example, in that example, would correspond to a second
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`encoder.
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`Ex. 2003 at 66:13-67:9. As noted, the inadequacy with that testimony is that it
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`simply states that the “first encoder” could be any encoder in Imai, whereas the
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`claim requires a particular “first encoder” that is, by design, configured to be faster
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`than a different particular “second encoder.”
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`Dr. Storer’s cross-examination confirmed that the Petition does not have any
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`theory that would actually meet those requirements. No matter how the question
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`was asked, or how many times, Dr. Storer continued to avoid naming any
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`particular encoder that he and Petitioners contend maps onto “first asymmetric data
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`compression encoder” of Claim 1. Instead, he simply continued to assert that it
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`would be the “faster” encoder. See, e.g., id. at 69:24-70:20, 76:5-80:9. Thus, Dr.
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`Storer refused to do any more than restate Claim 1’s requirement that the first
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`encoder compress “at a higher data compression rate.” Pet. 20 (“The ’477 Patent
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`uses the term ‘data compression rate’ to refer to the execution or algorithmic speed
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`of a compression encoder.”).
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`Such a vague theory of obviousness is impossible for the Board to evaluate.
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`Without providing any specific theory as to what constitutes the first and second
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`encoders of Claim 1, and how the first is configured to be faster than the second,
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`the Board cannot determine whether the prior art discloses the recited encoders,
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`much less discloses them configured as in the claims.
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`The reason for the Petition’s and Dr. Storer’s evasiveness is clear: It is
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`impossible to tell which encoder in Imai would be faster because the asserted art
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`does not disclose the compression rate (i.e. speed) of any encoder relative to any
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`other encoder. Infra at V.B.2 and VI.B (explaining that the prior art’s purported
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`disclosures regarding compression rate actually refer to other characteristics of the
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`encoders) Ex. 2002 ¶42.
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`And the Petition does not disclose sufficient information to determine which
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`encoder would be faster. Ex. 2002 ¶43. It only refers to the algorithms encoders
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`may employ by the names of their encoding standards and output data rate. But, as
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`Dr. Storer testified, it is not possible to know whether an encoder employing any
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`one algorithm or encoding standard mentioned in the prior art will encode faster
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`than another without knowing specific details of the implementation. Id. For
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`example, when asked to compare the speed of ATRAC 2 and MPEG Layer 3, he
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`responded “these issues depend on implementation:”
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`Is it -- to achieve a particular compression ratio with a particular set of
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`audio data, would it usually be faster to compress with MPEG layer 3
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`or ATRAC 2?
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`[objections and repeating of question]
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`THE WITNESS: So, again, it seems like pretty much the same question
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`you asked before, and the answer would begin the same way, that the
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`question is almost phrased the wrong way. And this would apply not
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`just to audio, but would apply to audio standards, but certainly also
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`would apply to video standards and the example I gave with motion
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`compensation. It would apply to audio standards, for example, in the
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`example that -- that -- that Imai gives in paragraph 1 -- 690, even with
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`respect to a given standard that these issues depend on the
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`implementation.
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`Id. at 88:22-89:16; see also id. at 87:7-14 (“Q. Would it be faster to compress data
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`with MPEG layer 3 or ATRAC 2? A. So, no disrespect to your question, but the
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`way you phrased it doesn’t actually match up with the technology. We mentioned
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`earlier that both MPEG and ATRAC are standards, and those standards can be
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`implemented to run faster or slower and also in a tradeoff to achieve more or less
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`compression.”). And he provided the same answer when asked to compare the
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`speeds of other encoders using algorithms mentioned in the asserted art, such as
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`MPEG and H.263. at 96:19-97:5 (“[Y]ou could very well have a faster -- an H.263
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`coder that was faster than -- they worked faster on the same data as an MPEG
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`coder and vice versa -- okay?”).
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`Moreover, Dr. Storer testified that a POSITA would not necessarily know
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`which of two encoders is faster even if their output rate or compression ratios are
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`disclosed:
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`Q….Can a person of ordinary skill in the art reliably know that an
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`encoder that achieves a high compression ratio on a given piece of data
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`would have a lower compression rate than an encoder that achieves a
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`lower compression ratio on that same data?
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`[Objection and repeating of question]
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`THE WITNESS: So, first of all, you said – you prefaced your question
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`before asking it -- and thank you for repeating it -- that you were
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`specifically using ‘compression rate’ as its -- the term that's used in the
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`Fallon patent. [defines ‘Fallon Patent’]
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`So returning to my -- for example, my paragraph 124 that comes -- that
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`is now addressing this claim element that uses the term ‘compression
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`rate,’ and it says [reads definition].
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`So, for example, let’s take the world of – it’s almost simpler to think
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`about lossless compression, methods like, you know, PKzip or gzip or
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`other things like that. If I had two methods and one of them ran faster
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`and typically produced smaller output, I mean, obviously you would
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`just always use the second method, right?
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`So, generally, it’s sort of common sense that the reason I may be
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`looking at more than two methods is because there’s this tradeoff. Some
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`of them will run slower but typically give smaller output, and some of
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`them will run faster but may not give quite as small output.
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`Ex. 112:8-113:22.
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`Thus, the Petition’s vagueness creates an obviousness theory that even Dr.
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`Storer cannot evaluate: whereas the “first asymmetric data compression encoder”
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`of the claims must be “faster” than a “second” encoder, the prior art discloses
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`encoders by referring to their encoding standards and output rates, and does not
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`permit any finding than any one of Imai’s encoders would be “configured” to be
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`faster than any other on a systematic and predictable basis. The Petition’s failure to
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`map the disclosures in the prior art to the claims thus prevents it from meeting its
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`burden to show that the art discloses the encoders of Claim 1.
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`Ground 1 should thus be rejected for the simple reason that the Petition does
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`not even identify the recited encoders. See, e.g., Comcast Cable, 2017 WL
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`4102214, at *6; Arris Int’l, 2016 WL 6594910; Cao, 2014 WL 6706553, at *5;
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`ActiveVideo, 694 F.3d 1327-28 (a party asserting obviousness must “explain . . .
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`how any specific combination would operate or read on the asserted claims”);
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`Personal Web, 848 F.3d at 994 (A party seeking to demonstrate obviousness must
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`explain “how the combination of the two references [is] supposed to work”).
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`V. Ground 1 does not show that Imai discloses or suggests “a first
`asymmetric data compression encoder . . . configured to compress
`data blocks containing video or image data at a higher data
`compression rate than a second asymmetric data compression
`encoder”
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`A. Limitation 1[B] requires two asymmetric data compression
`encoders, with the first encoder being configured to compress
`video or image data faster than the second encoder
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`Claim 1 further requires that its “first asymmetric data compression
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`encoder” be configured to compress data “at a higher data compression rate” than
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`the “second asymmetric data compression encoder.” See Ex. 1001 at Cl. 1[B] (“a
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`first asymmetric data compression encoder . . . configured to compress . . . at a
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`higher data compression rate than a second asymmetric data compression
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`encoder”). Petitioners define “data compression rate” as “the execution or
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`algorithmic speed of a compression encoder.” Pet. 20. They further contend that “it
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`is the throughput of the asymmetric data compression encoder measured by the
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`amount of input data that it can compress per unit of time at a given
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`compression ratio.” Pet. 21 (emphasis added). Thus, under Petitioners’ definition
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`of “data compression rate,” Claim 1 requires “a first asymmetric data compression
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`encoder” that is configured to compress more input data per unit of time at a given
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`compression ratio than a “second asymmetric data compression encoder.” Ex. 2002
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`¶47.
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`Moreover, the requirement that the “first asymmetric data compression
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`encoder” is “configured to compress . . . at a higher data compression rate than a
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`second asymmetric data compression encoder” means the relationship between the
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`first and second encoders’ compression rates cannot arise as a side effect of some
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`other design choice, or by chance. Ex. 2002 ¶48. Rather, the claim’s recitation of
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`“configured” requires that the “first encoder” must compress at a higher rate than
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`the “second encoder” because it is designed to do so. Id.
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`To that effect, the Federal Circuit has distinguished “configured to” as
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`narrower than “capable of” or “suited to.” For instance, in Apex Eyewear, the court
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`distinguished “configured to” from the broader terms “capable of” or “suitable
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`for.” See Aspex Eyewear v. Marchon Eyewear, 672 F.3d 1335, 1349 (Fed. Cir.
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`2012) (construing “adapted to” in the narrower sense of “configured to,” “made
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`to,” or “designed to,” rather than in the “broader sense” of “capable of” or
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`“suitable for.”). It thus concluded that an apparatus or method that “simply . . . can
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`be made to serve [the] purpose” recited in the claim is not a method that is
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`“configured to